Although the tires are genuine, the defendant’s acts of selling constitutes infringement when the tires’ technical information, such as load index, production place or dimension were modified without the authorization of the trademark owner.

COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN (hereinafter as “Michelin”) owns in China the three trademarks “MICHELIN in Chinese” (Figure 1), “MICHELIN” (Figure 2) and “MICHELIN & tire man device” (Figure 3) for tires, in Class 12. The trademarks are well recognized in the public of China.

In 2011, a Mr. Jin sold, in his auto parts store, genuine MICHELIN tires bearing the trademark “MICHELIN & tire man device”. However, the technical characteristics of the tires, such as the load index, the production place, and the dimension on the tires were modified without Michelin’s approval.

MICHELIN found out and sued him before the Jinan Intermediate People’s Court, requesting an order cease of such acts of infringement and a financial compensation.

Jin argued that the tires were genuine products which manufactured by Michelin and that the trademarks on the tires were also affixed by Michelin, so that his act should not be recognized as trademark infringement. Furthermore, he also argued that he had ordered the products online and knew nothing about the modification of the information concerning the products.

After a trial, the court held that the activity of Mr. Jin constituted trademark infringement, although the tires that he sold were genuine products manufactured by Michelin. The Court took the view that the purpose of using a registered trademark is not only to distinguish the source of goods but also to pass on to the consumers a message of credibility regarding the trademark owner. The capacity of the trademark to distinguish the origin of the goods is linked with the long-term and stable quality of the goods or service identified by the registered trademark. Any act consisting of modifying index, information, production place, etc. of the goods, against the trademark owner’s consent, which is cutting the exclusive relation between the trademark owner and the goods, constitutes infringement of trademark owner’s rights and causes damage to its interests.

Besides, the defendant could not provide any legal source about how he obtained the goods. Therefore, he could not be exempted from the liability, as provided by law.

On April 26, 2012, the court made a Judgment (2011 Ji Min San Chu Zi No. 483), recognizing Jin’s act as trademark infringement and ordering him to cease the infringing activity and compensate for the losses of Michelin.

Click here to see Figures 1 - 3.

Comments

The traditional view is that the core function of trademark is to distinguish the source of goods. The acts of selling on others’ products after modification being made are difficult to be beaten according to the Trademark Law as there is no change on the registered trademark.

However, the ideas on the function of trademark are renewed significantly. Besides distinguishing the source of goods, the registered trademark always play an important role in the one-to-one correspondence between the trademark and the goods used on. For this case, the particular relation between the trademark owner and goods provided has been cut over. The information showing is wrong for the consumers though the registered trademark is still marked on the goods. The credibility of the trademark will be diluted and infected severely. Thus, the acts of selling “genuine products bearing genuine trademark” in this case constitutes trademark infringement.

There was a similar precedent judgment made by Intermediate People’s Court of Changsha in 2008. This judgment made by the Intermediate People’s Court of Jinan confirms the solution on this issue and gives a reference for dealing with such kind of cases in future.